Posts Tagged: "trademark Applications"

The number of trademark applications being filed by foreign companies with the United States Patent and Trademark Office (USPTO) has been growing steadily – and in China’s case rapidly – since 2013. In 2013, a total of 328,180 trademark applications were filed in the USPTO, of which 57,977 (17%) were filed by foreign applicants. In 2017, 451,009 trademark applications were filed with the USPTO and the total number filed by foreign-based applicants rose to 119,883 (26%)… It is important for U.S. companies to recognize that the increases in trademark filings in general and by foreign companies, in particular, signify future stiff competition in the marketplace and potentially serious threats to existing trademarks.

The default position of brands has often been to protect as many marks as possible, driving other applicants out and helping establish a well-known and profitable identity. When names can make or break a brand, a significant number of trademarks are created purely for protection. However, these protective practices lead to a systemic problem. When new entrants to a market are faced with trademark clutter, their only choice is to adopt equally aggressive application strategies. This behavior leads to more clutter and further reduces the available pool of marks for the next generation of applicants.

A trademark audit is a review of a brand owner’s current trademark portfolio to ensure that the brand owner’s trademark usage and trademark holdings are sufficient, comprehensive, and accurate. Good practices requires that a trademark audit be conducted yearly, or any time an existing trademark portfolio is acquired, even if there has already been IP due diligence. The primary goal of conducting a trademark audit is to ensure that there are no deficiencies in protection.

The U.S. Patent and Trademark Office is working on developing a rule that would require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney when filing trademark documents with the USPTO. The rule will enter a public comment period in November, when the Office plans to issue a notice of proposed rulemaking on the new requirement. The public comment period will end in February leading up to a final action next June which will become effective in July 2019.

Mass market online filing services simply do not give their clients the time and attention they require and deserve during the trademark application process. The money clients end up spending trying to fix mistakes – in legal fees, settlements and redeveloping products, packaging and marketing materials – would have been better spent doing it right from the start with a professional who is qualified to advise and guide them.

Trademarks protect distinctive marks, such as brand names, logos, and designs.  This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important, basic information about trademarks, as well as how start-ups can protect their trademarked intellectual property.

Enforcement of trademark rights in China is an ongoing issue faced by numerous corporations.  Invalidating or canceling a trademark registration in the Chinese market is time-consuming and costly.  The best way to defend your company’s valuable intellectual property assets is to put in place as many protections as possible.  If your company owns a creative design mark, consider going beyond the standard trademark registration and getting the “super trademark” by obtaining copyright registration for this artistic design element.

China has the largest domestic trademark register in the world. In 2017, over 5.2 million applications were filed, a figure which makes it around 10 times the size of the world’s second largest register, the USA. To look in more detail: in the first week of September 2017 alone, more than 116,000 applications were filed on the Chinese register – a number that exceeds the number of trademarks filed with the European Union Intellectual Property Office (EUIPO) in the whole of 2016.

According to Eric Perrott, a trademark and copyright attorney with Gerben Law Firm, chatter among U.S. trademark officials and attorneys regarding the increase of potentially fraudulent Chinese applications became more serious about a year ago. At that time, people were noting an increase of applications from specific Chinese provinces including Shenzhen, considered by many to be the Silicon Valley of China. “There’s a clear pattern that you can tell with some of the applications,” Perrott said. “They appear to be marks with arbitrary names or made-up jumbles of words.” Perrott notes that filing for marks that have no translation in a foreign language allows an applicant to file a trademark application on the cheapest basis possible, removing the need to file a $50 translation fee.

On March 21st, the Major League Baseball Players Association (MLBPA) filed a formal notice of opposition at the Trademark Trial and Appeal Board (TTAB) to challenge a federal trademark application filed by Michael P. Chisena of Garden City, NY. The trademark application, U.S. Trademark Application No. 87528440, seeks to protect the use of the standard character mark “HERE COMES THE JUDGE” in commerce on clothing including T-shirts, jerseys, athletic uniforms and caps.

UMBC has filed U.S. Trademark Application No. 87838422 which would protect the use of the standard character mark ’16 over 1′ for the sale of athletic apparel including footwear, hats and athletic uniforms. The university also filed U.S. Trademark Application No. 87838378, covering the standard character mark “RETRIEVER NATION”, and U.S. Trademark Application No. 87838377, covering the standard character mark “UMBC RETRIEVERS”. Each of these trademarks was filed on March 17th, one day after the UMBC Retrievers’ victory over the Virginia Cavaliers.

Typically, there are three categories of costs involved in filing trademark applications in Southeast Asia and, subsequently, getting them registered; these are official fees, attorney charges, and translation costs. As is the case with the other types of trademark costs, the costs are generally dependent on the number of classes of goods and services under which the trademark applications are filed. The ‘International Classification of Goods and Services’ contains 34 classes for goods and 11 classes for services.

Hasbro’s recent application to trademark the scent of Play-Doh is an example of how companies in the digital age market their products and protect their market share by using an complex intellectual property strategies. As more companies begin to implement nontraditional branding into their marketing strategies, they face legal uncertainties of how the law protects this form of intellectual property. Unfortunately, what qualifies as a legitimate scent mark remains opaque. This article will review the requirements of scent trademarks and discuss the complications associated with various aspects of these marks, including (1) the functionary doctrine; (2) the issue of scent subjectivity; (3) administrative and application difficulties; (4) the possibility of scent depletion; and (5) the uncertain benefits of scent trademarks.

The Trademark Manual of Examining Procedure (TMEP) provides some guidance on what an aroma needs to demonstrate before being registered, asserting that “the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” To overcome the “substantial” threshold, an applicant must satisfy two conditions by establishing that the mark is (1) nonfunctional and (2) distinctive. An aroma that meets both of these requirements is eligible for registration on the Principal Register under §2(f) of the Latham Act, or on the Supplemental Register if the scent is nonfunctional but has not yet acquired distinctiveness. Hasbro is hoping that the scent of Play-Doh can be a source identifier for its modeling compound in the noses of consumers.